Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (9)
The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b)
.
This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on effective date, visit: effective date.
For more information on incorporation by reference, visit: incorporation by reference.
Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:
- It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
- For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.
The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on incorporation by reference, visit: incorporation by reference.
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:
- The application was filed before September 21, 2004 (the effective date of the provisions)
- The claim for priority/benefit of the prior-filed application was not present on the filing date
- The omitted portion is not completely contained in the prior-filed application
- A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
- An English language translation of a non-English prior-filed application was not submitted
- The applicant did not identify where the omitted portion can be found in the prior-filed application
If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason]
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
To learn more:
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:
For applications filed on or after September 21, 2004:
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
Additionally, for these applications:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
For applications filed before September 21, 2004:
The incorporation by reference statement could appear in the application transmittal letter or in the specification.
It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on incorporation by reference, visit: incorporation by reference.
37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.
The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application
. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.
If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent applications, visit: patent applications.
An applicant can incorporate by reference a prior application in a continuing application by including an explicit statement in the specification of the continuing application. The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are ‘hereby incorporated by reference.’ The statement must appear in the specification.
This incorporation by reference can be useful for adding inadvertently omitted material from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
To learn more:
No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.
This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.
Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.
To learn more:
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (7)
The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.
Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:
- The application must contain a priority or benefit claim to a prior-filed application
- The omitted material must be completely contained in that prior-filed application
- The omission must have been inadvertent
This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”
If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:
“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”
In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.
There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):
- The application must have been filed on or after September 21, 2004
- Material must have been inadvertently omitted from the application
- A priority or benefit claim to a prior-filed application must have been present on the filing date
- The omitted material must be completely contained in the prior-filed application
- An amendment to add the omitted material must be filed within the time period set by the USPTO
- Other requirements like supplying copies of prior applications may apply
As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).
To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:
- File an amendment to include the omitted material within the time period set by the USPTO
- Ensure the amendment is filed before the close of prosecution or abandonment of the application
- Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
- Provide an English translation if the prior-filed application is in a foreign language
- Identify where the omitted material can be found in the prior-filed application
The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”
Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:
- It is only effective for the United States
- It does not affect the international filing date
- It cannot be used to accord an international filing date
- Requests to add omitted material will not be acted upon before national stage entry
The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”
No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:
“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”
Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.
MPEP 201 - Types of Applications (2)
Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:
- It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
- For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.
The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on incorporation by reference, visit: incorporation by reference.
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:
For applications filed on or after September 21, 2004:
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
Additionally, for these applications:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
For applications filed before September 21, 2004:
The incorporation by reference statement could appear in the application transmittal letter or in the specification.
It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on incorporation by reference, visit: incorporation by reference.
MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (11)
The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b)
.
This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on effective date, visit: effective date.
For more information on incorporation by reference, visit: incorporation by reference.
The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.
Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:
- The application must contain a priority or benefit claim to a prior-filed application
- The omitted material must be completely contained in that prior-filed application
- The omission must have been inadvertent
This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”
If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:
“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”
In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):
- The application must have been filed on or after September 21, 2004
- Material must have been inadvertently omitted from the application
- A priority or benefit claim to a prior-filed application must have been present on the filing date
- The omitted material must be completely contained in the prior-filed application
- An amendment to add the omitted material must be filed within the time period set by the USPTO
- Other requirements like supplying copies of prior applications may apply
As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).
The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:
- The application was filed before September 21, 2004 (the effective date of the provisions)
- The claim for priority/benefit of the prior-filed application was not present on the filing date
- The omitted portion is not completely contained in the prior-filed application
- A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
- An English language translation of a non-English prior-filed application was not submitted
- The applicant did not identify where the omitted portion can be found in the prior-filed application
If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason]
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.
The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application
. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.
If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent applications, visit: patent applications.
To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:
- File an amendment to include the omitted material within the time period set by the USPTO
- Ensure the amendment is filed before the close of prosecution or abandonment of the application
- Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
- Provide an English translation if the prior-filed application is in a foreign language
- Identify where the omitted material can be found in the prior-filed application
The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”
Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:
- It is only effective for the United States
- It does not affect the international filing date
- It cannot be used to accord an international filing date
- Requests to add omitted material will not be acted upon before national stage entry
The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”
No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:
“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”
Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.
Patent Law (24)
The incorporation-by-reference statement in a patent application should include information about specific types of electronic documents that are to become part of the permanent USPTO records. According to 37 CFR 1.77(b)(5), this statement should identify:
- The names of each file
- The date of creation of each file
- The size of each file in bytes
This applies to the following document types:
- A ‘Computer Program Listing Appendix’
- A ‘Sequence Listing’
- ‘Large Tables’
- An XML file for a ‘Sequence Listing XML’
The MPEP states, The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application.
To learn more:
The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b)
.
This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on effective date, visit: effective date.
For more information on incorporation by reference, visit: incorporation by reference.
The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.
Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:
- It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
- For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.
The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on incorporation by reference, visit: incorporation by reference.
In patent applications, the distinction between essential and nonessential material is important for incorporation by reference:
- Essential material is defined in 37 CFR 1.57(d) as material necessary to meet the requirements of 35 U.S.C. 112(a), (b), or (f). It can only be incorporated by reference to a U.S. patent or U.S. patent application publication.
- Nonessential material is subject matter referred to for purposes of indicating the background of the invention or illustrating the state of the art. It can be incorporated by reference to a wider range of sources, including foreign patents and non-patent publications.
As stated in the MPEP: ‘Other material (‘Nonessential material’) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications.’
To learn more:
Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:
- The application must contain a priority or benefit claim to a prior-filed application
- The omitted material must be completely contained in that prior-filed application
- The omission must have been inadvertent
This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”
Essential material is defined in 37 CFR 1.57(d) as material that is necessary to:
- Provide a written description of the claimed invention as required by 35 U.S.C. 112(a)
- Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)
- Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f)
Essential material may only be incorporated by reference to a U.S. patent or patent application publication.
To learn more:
If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:
“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”
In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
When an applicant chooses to accept a patent application as deposited without all the drawings, they have two main options:
- File an amendment to remove references to the missing drawings:
- Submit replacement drawing sheets to renumber the figures consecutively
- Amend the specification to remove references to omitted drawings and correct figure numbers
- Ensure compliance with 37 CFR 1.121(d) for drawing changes and 37 CFR 1.121(b)(3) and 1.125 for specification changes
- File an amendment to add the missing figures by incorporation by reference:
- Rely on 37 CFR 1.57(b) if the application claims priority to a prior-filed application containing the omitted portion
- Submit new and replacement drawing sheets in compliance with 37 CFR 1.121(d)
- Ensure no new matter is added, as prohibited by 35 U.S.C. 132(a)
The MPEP states: Applicant may accept the application as deposited in the USPTO by either: (1) filing an amendment including replacement drawing sheets… (2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference under 37 CFR 1.57(b) or other portions of the original disclosure, without adding any new matter
To learn more:
An ineffective incorporation by reference in a patent application can have several consequences:
- The incorporated material may not be considered part of the application disclosure.
- This could result in rejections under 35 U.S.C. 112 for lack of written description or enablement.
- The application may lose the benefit of an earlier filing date if the incorporation was meant to provide essential subject matter.
- Corrections may be required, which could delay prosecution.
According to 37 CFR 1.57(h): ‘An incorporation of material by reference that does not comply with paragraphs (c), (d), or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by ยง 1.114(b), or abandonment of the application, whichever occurs earlier.’
It’s crucial to ensure that all incorporations by reference are properly executed to avoid these potential issues.
To learn more:
To learn more:
There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):
- The application must have been filed on or after September 21, 2004
- Material must have been inadvertently omitted from the application
- A priority or benefit claim to a prior-filed application must have been present on the filing date
- The omitted material must be completely contained in the prior-filed application
- An amendment to add the omitted material must be filed within the time period set by the USPTO
- Other requirements like supplying copies of prior applications may apply
As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).
The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:
- The application was filed before September 21, 2004 (the effective date of the provisions)
- The claim for priority/benefit of the prior-filed application was not present on the filing date
- The omitted portion is not completely contained in the prior-filed application
- A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
- An English language translation of a non-English prior-filed application was not submitted
- The applicant did not identify where the omitted portion can be found in the prior-filed application
If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason]
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
To learn more:
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:
For applications filed on or after September 21, 2004:
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
Additionally, for these applications:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
For applications filed before September 21, 2004:
The incorporation by reference statement could appear in the application transmittal letter or in the specification.
It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on incorporation by reference, visit: incorporation by reference.
37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.
The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application
. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.
If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent applications, visit: patent applications.
To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:
- File an amendment to include the omitted material within the time period set by the USPTO
- Ensure the amendment is filed before the close of prosecution or abandonment of the application
- Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
- Provide an English translation if the prior-filed application is in a foreign language
- Identify where the omitted material can be found in the prior-filed application
The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”
To properly incorporate material by reference in a patent application:
- Use the root words ‘incorporate’ and ‘reference’ (e.g., ‘incorporate by reference’) to express a clear intent to incorporate.
- Clearly identify the referenced patent, application, or publication.
- For essential material, only incorporate by reference to a U.S. patent or U.S. patent application publication.
- For nonessential material, you may incorporate by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications.
As stated in 37 CFR 1.57(c): ‘An incorporation by reference must be set forth in the specification and must: (1) Express a clear intent to incorporate by reference by using the root words ‘incorporat(e)’ and ‘reference’ (e.g., ‘incorporate by reference’); and (2) Clearly identify the referenced patent, application, or publication.’
To learn more:
To correct an improper incorporation by reference in a patent application:
- File an amendment to include the material that was improperly incorporated.
- Submit a statement that the amendment contains no new matter.
- Ensure the correction is made within the time period set by the Office, or no later than the close of prosecution as defined by 37 CFR 1.114(b).
According to 37 CFR 1.57(g): ‘Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.’
Note that corrections after abandonment require a petition to revive under 37 CFR 1.137, and corrections after patent issuance require a reissue application.
To learn more:
An applicant can incorporate by reference a prior application in a continuing application by including an explicit statement in the specification of the continuing application. The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are ‘hereby incorporated by reference.’ The statement must appear in the specification.
This incorporation by reference can be useful for adding inadvertently omitted material from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
To learn more:
Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:
- It is only effective for the United States
- It does not affect the international filing date
- It cannot be used to accord an international filing date
- Requests to add omitted material will not be acted upon before national stage entry
The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”
No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:
“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”
Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.
Yes, you can incorporate material by reference in a provisional patent application. The limitations on incorporation by reference that apply to non-provisional applications do not apply to provisional applications or applications relied on only to establish an earlier effective filing date.
As stated in the MPEP: ‘The limitations on the material which may be incorporated by reference in U.S. patent applications which are to issue as U.S. patents do not apply to applications relied on only to establish an earlier effective filing date under 35 U.S.C. 119 or 35 U.S.C. 120.’
However, it’s important to note that the incorporation by reference must still be clear and properly executed to be effective.
To learn more:
No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.
This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.
Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.
To learn more:
Patent Procedure (24)
The incorporation-by-reference statement in a patent application should include information about specific types of electronic documents that are to become part of the permanent USPTO records. According to 37 CFR 1.77(b)(5), this statement should identify:
- The names of each file
- The date of creation of each file
- The size of each file in bytes
This applies to the following document types:
- A ‘Computer Program Listing Appendix’
- A ‘Sequence Listing’
- ‘Large Tables’
- An XML file for a ‘Sequence Listing XML’
The MPEP states, The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application.
To learn more:
The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b)
.
This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on effective date, visit: effective date.
For more information on incorporation by reference, visit: incorporation by reference.
The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be added to the application by way of a later-filed amendment if the inadvertently omitted portion is completely contained in a prior-filed application for which priority or benefit is claimed, even though there is no explicit incorporation by reference of the prior-filed application.
Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:
- It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
- For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.
The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on Divisional application, visit: Divisional application.
For more information on incorporation by reference, visit: incorporation by reference.
In patent applications, the distinction between essential and nonessential material is important for incorporation by reference:
- Essential material is defined in 37 CFR 1.57(d) as material necessary to meet the requirements of 35 U.S.C. 112(a), (b), or (f). It can only be incorporated by reference to a U.S. patent or U.S. patent application publication.
- Nonessential material is subject matter referred to for purposes of indicating the background of the invention or illustrating the state of the art. It can be incorporated by reference to a wider range of sources, including foreign patents and non-patent publications.
As stated in the MPEP: ‘Other material (‘Nonessential material’) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications.’
To learn more:
Incorporation by reference under 37 CFR 1.57(b) is a provision that allows applicants to add inadvertently omitted material to a patent application if certain conditions are met. Specifically:
- The application must contain a priority or benefit claim to a prior-filed application
- The omitted material must be completely contained in that prior-filed application
- The omission must have been inadvertent
This provision acts as a safeguard for applicants when material is accidentally left out of an application due to clerical error. As stated in the MPEP, “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when a page(s) of the specification, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error.”
Essential material is defined in 37 CFR 1.57(d) as material that is necessary to:
- Provide a written description of the claimed invention as required by 35 U.S.C. 112(a)
- Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)
- Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by 35 U.S.C. 112(f)
Essential material may only be incorporated by reference to a U.S. patent or patent application publication.
To learn more:
If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:
“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”
In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.
To incorporate material from a prior-filed application under 37 CFR 1.57(b), several requirements must be met:
- The inadvertently omitted portion must be completely contained in the prior-filed application.
- A copy of the prior-filed application must be submitted (except for applications filed under 35 U.S.C. 111).
- If the prior-filed application is in a non-English language, an English language translation must be submitted.
- The applicant must identify where the inadvertently omitted portion can be found in the prior-filed application.
The MPEP states that an amendment may not comply with 37 CFR 1.57(b) if any of these conditions are not met. For example, it notes that non-compliance may occur if the inadvertently omitted portion is not completely contained in the prior-filed application
or if applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent application requirements, visit: patent application requirements.
For more information on prior-filed application, visit: prior-filed application.
When an applicant chooses to accept a patent application as deposited without all the drawings, they have two main options:
- File an amendment to remove references to the missing drawings:
- Submit replacement drawing sheets to renumber the figures consecutively
- Amend the specification to remove references to omitted drawings and correct figure numbers
- Ensure compliance with 37 CFR 1.121(d) for drawing changes and 37 CFR 1.121(b)(3) and 1.125 for specification changes
- File an amendment to add the missing figures by incorporation by reference:
- Rely on 37 CFR 1.57(b) if the application claims priority to a prior-filed application containing the omitted portion
- Submit new and replacement drawing sheets in compliance with 37 CFR 1.121(d)
- Ensure no new matter is added, as prohibited by 35 U.S.C. 132(a)
The MPEP states: Applicant may accept the application as deposited in the USPTO by either: (1) filing an amendment including replacement drawing sheets… (2) filing an amendment to add the missing figure(s) by relying on an incorporation by reference under 37 CFR 1.57(b) or other portions of the original disclosure, without adding any new matter
To learn more:
An ineffective incorporation by reference in a patent application can have several consequences:
- The incorporated material may not be considered part of the application disclosure.
- This could result in rejections under 35 U.S.C. 112 for lack of written description or enablement.
- The application may lose the benefit of an earlier filing date if the incorporation was meant to provide essential subject matter.
- Corrections may be required, which could delay prosecution.
According to 37 CFR 1.57(h): ‘An incorporation of material by reference that does not comply with paragraphs (c), (d), or (e) of this section is not effective to incorporate such material unless corrected within any time period set by the Office, but in no case later than the close of prosecution as defined by ยง 1.114(b), or abandonment of the application, whichever occurs earlier.’
It’s crucial to ensure that all incorporations by reference are properly executed to avoid these potential issues.
To learn more:
To learn more:
There are several key conditions that must be met to use incorporation by reference under 37 CFR 1.57(b):
- The application must have been filed on or after September 21, 2004
- Material must have been inadvertently omitted from the application
- A priority or benefit claim to a prior-filed application must have been present on the filing date
- The omitted material must be completely contained in the prior-filed application
- An amendment to add the omitted material must be filed within the time period set by the USPTO
- Other requirements like supplying copies of prior applications may apply
As stated in the MPEP: “The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(b):” followed by a list of specific conditions labeled (A) through (I).
The MPEP outlines several reasons why an amendment might not comply with 37 CFR 1.57(b). These include:
- The application was filed before September 21, 2004 (the effective date of the provisions)
- The claim for priority/benefit of the prior-filed application was not present on the filing date
- The omitted portion is not completely contained in the prior-filed application
- A copy of the prior-filed application was not submitted (except for applications filed under 35 U.S.C. 111)
- An English language translation of a non-English prior-filed application was not submitted
- The applicant did not identify where the omitted portion can be found in the prior-filed application
If any of these conditions are not met, the examiner will state that the amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(b) filed [date] is not in compliance with 37 CFR 1.57(b) because [specific reason]
.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
Incorporation by reference for foreign priority applications is an important safeguard for applicants. Here’s how it works:
- For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application is considered an incorporation by reference of the prior-filed foreign priority application.
- This incorporation is subject to the conditions and requirements of 37 CFR 1.57(b).
- It applies to inadvertently omitted material from the foreign priority application.
- Applicants can provide an explicit incorporation by reference statement for broader coverage.
The MPEP states: For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
This provision helps protect applicants from accidental omissions in their U.S. applications.
To learn more:
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:
For applications filed on or after September 21, 2004:
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
Additionally, for these applications:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
For applications filed before September 21, 2004:
The incorporation by reference statement could appear in the application transmittal letter or in the specification.
It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on incorporation by reference, visit: incorporation by reference.
37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.
The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application
. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.
If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.
For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).
For more information on incorporation by reference, visit: incorporation by reference.
For more information on patent applications, visit: patent applications.
To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:
- File an amendment to include the omitted material within the time period set by the USPTO
- Ensure the amendment is filed before the close of prosecution or abandonment of the application
- Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
- Provide an English translation if the prior-filed application is in a foreign language
- Identify where the omitted material can be found in the prior-filed application
The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”
To properly incorporate material by reference in a patent application:
- Use the root words ‘incorporate’ and ‘reference’ (e.g., ‘incorporate by reference’) to express a clear intent to incorporate.
- Clearly identify the referenced patent, application, or publication.
- For essential material, only incorporate by reference to a U.S. patent or U.S. patent application publication.
- For nonessential material, you may incorporate by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications.
As stated in 37 CFR 1.57(c): ‘An incorporation by reference must be set forth in the specification and must: (1) Express a clear intent to incorporate by reference by using the root words ‘incorporat(e)’ and ‘reference’ (e.g., ‘incorporate by reference’); and (2) Clearly identify the referenced patent, application, or publication.’
To learn more:
To correct an improper incorporation by reference in a patent application:
- File an amendment to include the material that was improperly incorporated.
- Submit a statement that the amendment contains no new matter.
- Ensure the correction is made within the time period set by the Office, or no later than the close of prosecution as defined by 37 CFR 1.114(b).
According to 37 CFR 1.57(g): ‘Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.’
Note that corrections after abandonment require a petition to revive under 37 CFR 1.137, and corrections after patent issuance require a reissue application.
To learn more:
An applicant can incorporate by reference a prior application in a continuing application by including an explicit statement in the specification of the continuing application. The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are ‘hereby incorporated by reference.’ The statement must appear in the specification.
This incorporation by reference can be useful for adding inadvertently omitted material from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
To learn more:
Incorporation by reference under 37 CFR 1.57(b) has limited applicability to international patent applications:
- It is only effective for the United States
- It does not affect the international filing date
- It cannot be used to accord an international filing date
- Requests to add omitted material will not be acted upon before national stage entry
The MPEP states: “Any amendment to an international application pursuant to 37 CFR 1.57(b)(1) will be effective only as to the United States and shall have no effect on the international filing date of the application. The incorporation by reference relief provided in 37 CFR 1.57(b) cannot be relied upon to accord an international filing date to an international application that is not otherwise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11.”
No, incorporation by reference under 37 CFR 1.57(b) cannot be used to add material to a granted patent. This provision is only applicable during the application process, before a patent is granted. The MPEP clearly states:
“If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted material to that patent via 37 CFR 1.57(b).”
Once a patent has been granted, other mechanisms such as reissue or certificate of correction would need to be considered for making changes or additions to the patent, subject to their own specific requirements and limitations.
Yes, you can incorporate material by reference in a provisional patent application. The limitations on incorporation by reference that apply to non-provisional applications do not apply to provisional applications or applications relied on only to establish an earlier effective filing date.
As stated in the MPEP: ‘The limitations on the material which may be incorporated by reference in U.S. patent applications which are to issue as U.S. patents do not apply to applications relied on only to establish an earlier effective filing date under 35 U.S.C. 119 or 35 U.S.C. 120.’
However, it’s important to note that the incorporation by reference must still be clear and properly executed to be effective.
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No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.
This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.
Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.
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